Advertising and the Transformation of Trademark Law for SSRN (original) (raw)
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Conventionally, it has been argued that by protecting trademarks by intellectual property rights, unfair competition is avoided, and consumer choice is ensured. Nevertheless, it has been recognized that trademarks also have an investment function. Put differently, these rights serve to develop, advertise and invest in brands. This change of paradigm could provide trademark owners with powerful tools to shield their investments. Though it is necessary that legal frameworks acknowledge this function of trademarks, the latter should not jeopardise higher public interests. Resumen Tradicionalmente, se ha dicho que, al escudar las marcas con derechos de propiedad intelectual, se evita la competencia desleal, y se protege a los consumidores y su capacidad de elegir. Sin embargo, se ha reconocido que las marcas también pueden usarse como inversiones. En otras palabras, estos derechos sirven para desarrollar, promocionar e invertir en nombres comerciales. Este cambio de paradigma podría dar a los titulares de dichas marcas poderosas herramientas para proteger sus inversiones. Ahora bien: aunque es necesario que los ordenamientos jurídicos reconozcan esta función de las marcas, esto no debería poner en riesgo otros intereses públicos.
Rebooting Trademarks for the Twenty-First Century, 49 U. Louisville L. Rev. 517 (2011)
2011
Trademarks have long suffered from an "ugly stepsister" status in the realm of intellectual property. Quasi-market regulation tool, quasi-investment property; trademark's historical role as both consumer-information signifier and producer-investment asset has led to increasingly confusing dichotomous treatment under the Lanham Act. The potentially borderless markets ofcyberspace, with their new marketing techniques and new competitive spaces, have only heightened this confision. Stumbling attempts to extend protection for marks under the Lanham Act beyond traditional notions of trademark use and consumer confusion to encompass the investment protection side of trademarks, such as the development offederal dilution and anti-ybersquatting acts, only serve to twist trademark law into unnecessary and ultimately useless contortions. Instead of ignoring the dichotomous nature of trademarks, it is time to "reboot" the Lanham Act to recognize that the dual role of trademarks cannot be adequately protected by a legal regime that ignores such dichotomies. In such new, competitive spaces on the Internet as domain names, keywords, pop-up advertisements, and metatags, traditional notions of trademark use and consumer conftsion have little relevance. It is time to acknowledge the evolved nature of trademarks as both traditional reputation-based source designators and nontraditional information assets, and revise the law to refect the diferent protection norms required for these two different types of "marks."
THE DOCTRINE OF TRADEMARK FUNCTIONS AS A RESTRICTION MECHANISM
Academia Letters, 2021
Under the EU Trademark Law, double identity infringement means the use of identical goods /services and marks in the course of trade. However, via the doctrine of trademark functions developed by the Court of Justice, there appears to be an additional requirement: one of the functions that trademark has shall be affected. There is an argument that this construction of the article plays a significant role in restricting the exclusive protection zone granted to the trademark owners. Hereby in this paper, I argue that the reverse is the case. Double-identity ground is stated in the 5 (1)(a) TMD. Accordingly, a trademark should not be registered. If registered, it shall be liable to be declared invalid if it is identical to the goods or services that earlier trademarks are protected for. Unlike the protection provided in article 5 (1)(b), namely in cases of confusing similarities, there is no need to show confusion for earlier trademarks since they are protected unconditionally against any later application. However, the Court has developed the doctrine of trademark functions. Accordingly, there should be an identical mark, an identical goods/service, and an adverse effect on the functioning of the mark. The latter requirement, which the CJEU traditionally understood as referring to the function to guarantee to consumers the identity of the origin of the goods or services (function of origin), evolved substantially over time. The argument in the question is flawed, but it might be the initial motive of the Court: when construed literally, the protection granted under double identity claim seems absolute. So, it is possible that the court aimed to limit the scope of protection. Namely, in addition to proving identical signs and identical products, the element of harm might be introduced as a further requirement[1] with this limitation object in mind. For a while, origin function had been the only function that the Court referred to in article 5 (1)(a). As long as a use of identical mark and service/goods does not harm the origin function of the trade mark, double